Federal Court of Appeals recognises 'secondary meaning' doctrine

A recent decision rendered by the Federal Court of Appeals has recognised the 'secondary meaning' doctrine, which has been a controversial topic in the country. 

RHS Franchising Ltda, the owner of several registrations in Brazil for the trademark CHINA IN BOX (both as a word mark and in a composite form) filed a court action against the Brazilian Patent and Trademark Office (INPI) and Karen Regina Alcon ME, requesting the cancellation of Registration No 825692257 for the composite mark ASIA IN BOX, reproduced below:

Both the plaintiff’s mark and the defendant’s mark covered services in the same market segment (mainly food and restaurant services).

The trial judge ruled in favour of the plaintiff and ordered the cancellation of the registration for the composite mark ASIA IN BOX.

The defendant appealed. The Federal Court of Appeals in Rio de Janeiro reversed the decision of the trial judge, thus deciding the appeal in the defendant’s favour. The court stated that the marks should be allowed to co-exist in the market because they were sufficiently distinct and the term 'in box' is of common use to designate products that are delivered “in a box”.

The decision rendered by the panel of judges of the Federal Court of Appeals, however, was not unanimous, which enabled the plaintiff to lodge another appeal before the same court. The plaintiff argued that the trademarks were confusingly similar and that its trademark had been in use since 1992, and requested that the defendant’s registration for ASIA IN BOX be cancelled.

The second appeal (filed by the plaintiff) was decided on its favour and the most interesting aspect of the decision was the recognition of the secondary meaning doctrine by the Brazilian courts. As this doctrine has not yet been officially adopted by the INPI, the decision rendered by the Federal Court of Appeals in this matter is important because it shows that the Brazilian courts are already recognising and applying the doctrine. 

It should be noted, however, that this still is a controversial issue in Brazil and that, in other court decisions, the secondary meaning doctrine has not been recognised or applied.

The decision in the present case, which was rendered on favour of the owner of the earlier registered trademark CHINA IN BOX, was based on four main grounds - namely:

• The plaintiff’s mark CHINA IN BOX had acquired secondary meaning and was directly associated with the service of offering Chinese food in a box, which was first created by the plaintiff. 
• The adoption of the expression 'in box' by the defendant in its mark ASIA IN BOX indicated its intention of benefiting from the fame of the plaintiff’s mark CHINA IN BOX.
• If the trademarks ASIA IN BOX and CHINA IN BOX were allowed to co-exist in the same market segment, there would be a reduction of the distinctiveness of the mark CHINA IN BOX and the defendant would take advantage of the concept of “Chinese food served in a box” created by the plaintiff.
• The similarity between the trademarks ASIA IN BOX and CHINA IN BOX would cause consumer confusion, as consumers might assume that ASIA IN BOX is a variation of CHINA IN BOX.

As a consequence of this decision, the registration on the composite mark ASIA IN BOX was cancelled, mainly due the recognition that the plaintiff’s mark CHINA IN BOX had acquired secondary meaning. Appeals can still be filed before the Superior Tribunal of Justice and the Supreme Court.

There have been discussions in Brazil regarding the recognition and application of the secondary meaning doctrine. It is undeniable that certain marks, although descriptive and thus weak, have acquired secondary meaning; therefore, there is a tendency among the courts to adopt this concept on a more regular basis. In spite of this, the INPI has not yet formally expressed its position regarding the secondary meaning doctrine in its Trademark Examination Guidelines.

Patrícia Lusoli, Guerra Propriedade Industrial, Rio de Janeiro